Pearl and Dean vs Shoemart - PROTECTION OF DRAWING DOES NOT EXTEND TO

UNAUTHORIZED DUPLICATION OF OBJECT DRAWN BECAUSE

- Since the light boxes cannot, by any stretch of the imagination, be COPYRIGHT EXTENDS ONLY TO DESCRIPTION OR EXPRESSION
considered as either prints, pictorial illustrations, advertising copies, labels, OF OBJECT AND NOT TO OBJECT ITSELF. IT DOES NOT PREVENT
tags or boz wraps, to be properly classified as a copyrightable class O ONE FROM USING THE DRAWINGS TO CONSTRUCT THE OBJECT
work, we have to agree with SMI when it posited that what was copyrighted PORTRAYED IN THE DRAWING
were the technical drawings only, and not the light boxes themselves
- When a drawing is technical and depicts a utilitarian object, a copyright Imperial Homes vs Lamont
over the drawings like plaintiff appellants will not extend to the actual
object. - There is no copyright infringement when one who, without being
- Copyright in the strict senseof the term, is purely a statutory right. Being a authorized, uses a copyrighted architectural plan to construct a structure.
mere statutory grant, the rights are limited to what the statute confers. It Copyright does not extend to structures themselves
may be obtained and enjoyed only with respect to the subjects and by the
GAME SHOW (Joaquin vs Drilon)
persons, and on terms and condition specified in the statute
- It can cover only the works falling within the statutory enumeration or - format of show is NOT copyrightable
description - the format or mechanics of a television show is not included in the list of
- The lightbox was not a literary or artistic piece which could be copyrighted protected works in PD 4.
under the copyright law. And no less clearly, neither could the lack of - The protection afforded by the law cannot be extended to cover them
statutory authority to make the light box copyrightable be remedied bythe - Copyright in the strict sense of term, is purely a statutor
simplistic act of entitling the copyright certificate issued by the National - the format or mechanics of a television show is not included in the list of
Library as advertising display units. protected works in PD 4.
- In fine, if SMI and NEMI reprinted and D technical drawings for sale to the - The protection afforded by the law cannot be extended to cover them
public without license from PD then no doubt they would have been guilty - Copyright in the strict sense of term, is purely a statutory right
of copyright infringement. But this was not the case. SMI and NEMIs acts - No copyright except that which is both created and secured by act of
complained of by PD were to have units similar or identical to the light box Congress
illustrated in the technical drawings manufactured by Metro and EYD - PD 49 in enumerating what are subject to copyright, refers to finished
rainbow advertising, for leasing out to different advertisers. NO works and NOT to concepts. The copyright does not extend to an idea,
INFIRNGEMENT procedure, process, system, method of operation, concepts, principles,
discovery, regardless of the form in which it is described, explained
Baker vs Selden
illustrated, or embodied in such work.
- Exclusivity to the actual forms is NOT EXTENDED by a copyright. - The copyright DOES NOT EXTEND to the general concept or format of its
- To grant a monopoly in underlying art when no examination of its novelty dating game show. A television show includes more than mere words can
has ever been made would be a surprise and a fraud upon public describe because it involves a whole spectrum of visuals and effects, video,
- The province of letters patent, not of copyright and audio, such that not similarity or dissimilarity may be found by merely
- No doubt aware that it is alleged original design would never be pass the describing the general copyright/format of both dating game shows
rigorous examination of a patent application, plaintiff-appellant fought to
foist a fraudulent monopoly on the public by conveniently resorting to a MUST CARRY RULE (ABS CBN vs Philippine Multi Media)
copyright registration which merely employees a recordal system without
the benefit of an in depth examination of novelty.
 - The rebroadcasting does not violate Section 211 of IP Code. There is no - Respondents copying is injurious. failure to acknowledge orginal author
merit in ABS CBNs contention that PMSI violated its broadcasters rights produces injurious effect. In cases of infringement, copying alone is not
under Section 211 of IP Code what is prohibited. The copying must produce an injurious effect. Here the
- PMSI is not engaged in rebroadcasting and thus cannot be considered to injury consists in that respondent robles lifted from petitioners book
have infringed ABS CBNs broadcasting rights and copyright. Neither is materials that were the result of the latters research work and compilation
PMSI guilty of infringement of ABS CBNS copyright under Section 177 of and misrepresented them as her own. She circulated the book DEP for
IP Code commercial use and did not acknowledge petitioners as her source
- Must carry rule is a limitation of copyright. It must be emphasized that the - Pulling out of books from the stores are indica of guilt. We consider as an
law on copyright is not absolute indica of guilt or wrongdoing the act of respondent Robles of pulling out
- The imposition of the must carry rule is within the NCs power to from Goodwill bookstores the book of DEP upon learning of petitioners
promulgate rules and regulations, as public safety and interest may require, complaint while pharisaically denying petitioners demand.
to encourage a larger and more effective use of communications, radio and - When the book DEP was re issued as a revised version, all pages cited by
television broadcasting facilities, and to maintain effective competition petitioners to contain portion of their book College English for today were
among private entities in these activities whenever the commission finds it eliminated
reasonably feasible.
Pirated Installers

- Gravamen of copyright infringement is the unaturhozed performance of any

To constitute infringement, it is not necessary that the whole or even a large portion acts covered by Section 5 PD 49. PD 49 enumerates the rights vested
of work shall have been copied. If so much is taken that the value of the original is exclusively on the copyright owner. Contrary to the DOJs ruling, the
sensibly diminished, or the labors of the original author are substantially and to an gravamen of copyright infringement is not merely the unauthorized
injurious extend appropriated by another, that is sufficient in point of law to manufacturing of intellectual works but rather the unauthorized
constitute piracy performance of any of the acts covered by Section 5.
- Any person who performs any under Section 5 without obtaining the
copyright owners prior renders himself civilly and criminally liable for
copyright infringement
Unfortunate Copying (Habana vs Felicidad Robles and Goodwill)
- Columbia Pics vs CA : infringement of a copyright is a trespass on a private
- Respondents act of lifting from the book petitioners substantial portions of domain owned and occupied by the owner of the copyright, and therefore
discussions and examples, and her failure to acknowledge the same in her protected by law, and infringement of copyright of piracy which is a
book is an infringement of petitioners copyrights synonymous term in this connection, consists in the doing by any person,
- Measure of substantiality of reproduction. When is there a substantial without the consent of the owner of the copyright, of anything the sole right
reproduction of a book? It does not necessarily require that the entire to do which is conferred by statute on the owner of copyright
copyrighted work, or even a large portion of it, be copied. If so much is - Evidence sufficient to support finding probable cause.
taken that the value of the original work is substantially diminished, there is
an infringement of copyright and to an injurious extent, the work is 1. 12 CD ROMS containing Microsoft software sacriz and samiano
appropriated. bought from respondents
- A copy of piracy is an infringement of the original, and it is no defense that 2. The cpu with pre installed Microsoft software sacriz and Samiano also
the pirate, in such cases, did not know whether or not he was infringing an purchased from respondents
copyright; he at least knew that what was copying was not his, and he 3. The 2831 cd roms containing Microsoft software seized from
copied at his peril respondents
 - The DOJ, on the one hand, refused topass upon the relevance of these
pieces of evidence

1. Obligations between the parties in civil and not criminal considering

that Microsoft merely sought the issuance of SW
2. Validity of microsofts termination of agreement must first be resolved
by proper court

ON other hand, DOJ ruled that Microsoft failed to present evidence proving that
what were obtained from respondents were counterfeit Microsfot products

READ MORE THIS CASE PAGE 320

Unregistered Copyright (Sportwear Manufacturing Inc vs Dadodette Enterprises)

- No copyright accrues in favour of MANLY despite issuance of the

certificate. Further copyright certificates issued in favour of MANLY
constitute merelyprima facie evidence of validity and ownership.
- NO PRESUMPTION of validity is created where other evidence exist that
may cast doubt on the copyright validity.
- Where there is sufficient proof that the copyrighted products are not original
creations but are readily available in the market under various brands, as in
this case, validityand originality will not be presumed and TC may properly
quash the issued warrant for lack of probable cause
- Besides, NO COPYRIGHT accrues in favour of MANLY despite issuance
of certificates of registration and deposit pursuant to section 2 rule 7 of
copyrights safeguards and regulations
- Certificates of registration and deposit issued by the National Libarary and
SC library serve merely as a notice of recording and registration of the work
by do not confer any right or title upon the registered copyright owner or
automatically put his work under the protective mantle of the copyright law.
- IT is not conclusive proof of copyright ownership. As it is, non registration
and deposit of the work within the prescribed period only makes the
copyright owner liable to pay fine.
 - Even without applying the paris convention Harvard university can invoke
section 4 which prohibits the registration of a mark which may disparage of
LAW ON TRADEMARK falsely suggest a connection with persons, living or dead, institutions.
Birkernstock vs Philippine Shoe Expo

- Respondent is deemed to have abandoned the mark. In this case, respondent The Durable Ang tibay
admitted that it failed to file the 10th year DAU for registration no. 56334
within the requisite period, oron or before October 21,2004 Ana ang vs toribio teodoro
- As a consequence it was deemed to have abandoned or withdrawn any right
or interest over the makr Birkenstock - Ang tibay is not a descriptive term.
- Neither can it incoke section 236 of IP Code which pertains to intellectual - We find it necessary to go into the etymology and meaning of tagalog
property righs obtained under previous intellectual property laws words and tibay to determine whether they are a descriptive term
- Petitioner has duly established its true and lawful ownership of the mark. - Whether they relate the quality or description of the merchandise to which
Besides, petitioner has duly established its true and lawful ownership of respondent has applied them as a trademark
mark Birkenstock - The word and is a definite article meaning the in English
- It is not the applicationor registration of trademark that vests ownership - Ang tibay as used by respondent to designate his wares, had exactly
thereof but it is the ownership of a trademark that confers the rightro performed that function for 22 years before petitioner adopted it as a
register the same. trademark in her own business
- A trademark is an industrial property over which its owner is entitled to - Toribios products shoes is similar to Angs product, pants and shirts.
property rights which cannot be appropriated by unscrupulous entities that, - The mere relation or association of articles is NOT CONTROLLING.
in one way or another, happen to register such trademark ahead of its true
Yummy Big Mac Mcdo vs LC Big Mak Burger
and lawful owner.
- Presumption of ownership accorded to a registrant must then necessarily - Big mac mark is valid as well as mcdonalds ownership over it. A mark is
yield to suprios evidence of actual and real ownership of a trademark valid if it is distinctive and thus not barred from registration under secion 4
of ra 166. However, once registered, not only the marksvalidity but also the
registrants ownership of the mark is prima facie presumed.
Goodwill Hunting (Fredco Manufacturing Corp vs President Harvard college) - Respondents use of Big Mak causes confusion. Petitioners claim that
respondents use of big mak mark on respondents hamburgers results in
- The mark Harvard veritas shield symbol is now deemed under ra 8293 confusion of goods, particularly with respect to petitioners habmburgers
- There is no dispute that the mark Harvard usedby freco is the same as the labelled big mac
mark Harvard in the Harvard veritas shield symbol of Harvard university. - Modern law recognizes that the protection to which the owner of a
- It is also not disputed that Harvard university was anmed Harvard college in trademark is entitled is not limited to guadng his goods or business from
1639 and that then, as now Harvard university is located in Cambridge. actual market competition with identical or similar products of the parties,
- Harvard university is entitled to protection in the Philippines of its trade but extends to all cases in which the use by ajunior appropriator of a
name Harvard even without registration of such trade name in the trademark or trade name is likely to lead to a confusion of source, as where
Philippines under Article 8 of Paris convention as well as section 37. The prospective purchasers would be misled into thinking that the complaining
Philippines and the US of America are both signatories to the Paris party has extended his business into the field or is in anyway connected
convention for the protection of industrial property with activities of infringer; or when it forestalls the normal potential
expansion of his business.
One more please Mcdo vs MacJoy Fastfood Beer is not confusing (Asia brewery vs CA)

- There is confucing similarity between the trademarks mcdo marks and - There is absolutely no similarity in the dominant features of both
macjoy and device . applying the dominancy test to the instant case. trademarks. Infringement is determined by test of dominancy rather than by
- Both marks use the corporate M design logo and the prefizes Mc and or differences or variations in details of one trademark and of another.
MAC asdominant features. First letter M in both marks puts emphasis on - Resemblance between the two trademarks such as would be likely to cause
the prefixes mc and mac by similar way in which they are depicted. the one mark to be mistaken for the other but this is not such similitude as
- Noted variations in marks are inconsequential. The differences and variation amounts to identity.
in styles as device depicting a head of chicken with cap and bowtie and
wings sprouting on both sides of chicken head, the heart shaped and stylistic If it sounds alike (Prosoruce International vs Horphag Research Management)
letters in macjoy and device.
- When two words are pronounce, the sound effects are confusingly similar.
Skechers vs Interpacific industrial The TC applied dominancy test in determining whether there was a
confusing similarity between the marks pycnogenol and PCO genols.
- The respondent is guilty of trademark infringement applying dominancy - Both words have same sffix which on evidence appears to be merely
test. descriptive and furnish no indication of orgin of article and hence, open for
- The use of the stylized s by respondent in its strong rubber shoes infringes trademark registration by plaintiff thru combination with another word
on the mark already registered by the petitioner with IPO. While it is - Although letters Y between P and C N : between O and C and S after L are
undiscputed that eptitiones stlzed S is whithin the ova; design missing in pettitioners amrk nevertheless when two words are pronounced,
- The dominant feature of the trademark is stylized S as it precisely the the sound effects are confusingly similar not to mention that they are both
stylized S which catches the eye of purchaser. described by their manufacturers as a food supplement and thus, identified
- Respondents shoes may not be an exact replica of peitioners shoes but as such by their public consumers
thefeatures and oversall design are so similar and alike that confusion is - Although there were dissimalrities in the trademark due to the type of letters
highly likely. used as well as sie, color and design employed on their individual
- While there may be dissimilarities between the apperances of shoes, to this packages.bottles, still the close relationshipof competing products name in
courts mind such similarities do not outweigh the stark and blatant sounds they were pronounced, clearly indicates that puchasers could be
similarities in their general features. misled into believing that they are same and or originates from a common
- Neither can thedifference in price be a complete defense in trademark source and manufacturer
infringement.
- Modern law recognizes that the protection to which the owner of a
trademark is entitled it not limited to guarding his goods or business from
Sunshine is NOT delmonte (Delmonte vs CA)
actual market competition with identical or similar products of parties, but
extends to all cases in which the use by a junior appropriator of a trademark - Side by side comparison is not the final test of similarity. While the court
or tradename is likely to lead to a confusion of a source as where does recognize these distinction, ti does not agree with conclusion that there
prospective purchasers would be misled into thinking that the complaining was no infringement or unfair competition. It seems to us that the lower
party has extended his business intot he field or is in anyway connected courts have been so preoccupied with details that they have not seen total
with the activities of infringer or when it forestalls the normal potential picture
expansion of his business - Side by side comparison is NOT THE FINAL TEST OF SIMILARITY
- Protection of trademarks is intended not only to preserve the goodwill and - The question is whetgher a casual purchase is confused.
reputation of trademark owner but also to safeguard the public as consmers - The questions is whether a casual purchaser is confused. The questions is
against confusion on these goods. not whether the two articles are distinguihshable by their label when set
 aside by side by side but whether the general confusion made by article -
upon the eye of casual purchaser who is unconspicious and off his guard, is
such as to likely result in his confounding it with original.
- In making purchasers, the consumer must depent upon his recollection of
appearance of the product which he intends to purchase. The buyer having
in mind mark or label of respondent must rely upon his memory
- Factors to consider by courts; primary is the cost of goods. Respondent
court failed to take into cosndieration several factors which should have
affected its conclusion, to wit: age, training and education of usual
purchaser, nature and cost of article.
- When sunshine chose to use same colors and letters as those used y del
monte without reasonable exaplanation, the inevitable conclusion is that it
was done deliberately to deceive. The predominant colors used in del monte
label are green and red orange, the same with sunshine. The word catsup in
both bottles is printed in white and style of print or letter is same.
Still approx. of tomato

Eve is not loom (Fruit of loom vs CA)

- Comparison of the words is not the only determinant factor. The trademarks
in their entirety as they appear in their respective labels or hang tags must
also be considered in relation to the goods to which they are attached.
- In cases involving infringement of trademark brought before this court it
has been consistenyl held that there is infringement of trademark when the
use of mark involved would be likely to cause confusion or mistake in mind
of public or to deceive purchasers as to the origin or source of commodity
- There are markes dissimilarities. In trademarks fruit of loom and fruit of
eve, the lone similar word is fruit. We agree with respondent court that by
mere pronouncing the two marks, it could hardly be said that it will provoke
confusion, as to mistake one for other.
- The similarities of competing tradenmarks in this case are completely lost in
substantial differences in the design and eneral appearance of their
respective hang tags.
- We have examined the two trademarks as they appear in hang tags
submitted by parties and we are impressed more by dissimilarities than by
the similarities appearing therein.
- Fruit of the loom and fruit of eve do not resemble each other as to confuse
or deceive an ordinary purchaser.
- The ordinary purchaser must be thought of as having and credited with at
least a modicum of intelligence.

Not once but twice tested (Agricultural vs Abyadang)